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Nando's v Fernando's: Food for thought

This Kat is originally from the provincial town of Reading [said Red-ing not Read-ing] in which, like many high streets, there are some questionably branded restaurants and shops. One restaurant in particular has often been the topic of discussion about whether or not it was an infringement of another well-known eatery. As it would happen, this issue has just appeared in the news as being the subject of an IP dispute.

It has been reported
that lawyers of popular chicken restaurant Nando’s,
Bird & Bird [natural choice of lawyer to protect
your chicken] have sent a Cease and Desist letter to the Reading based Fernando’s restaurant, earlier this
month. This Kat would like to chew ponder over the issue…

The Parties

As readers may be aware, Nando’s is a popular Portuguese Peri
Peri Chicken restaurant, which originated in Rosettenville
in Johannesburg, South Africa in 1987 and now has 1186 Nando's in the world,
392 of which are in the United Kingdom.

Fernando’s
Reading is also a Portuguese Peri Peri Chicken restaurant, open since 15th
September 2017. Fernando’s director, Asam Aziz claimed that
he got the idea for the restaurant from ITV’s dating show Take Me Out, where
couples take a trip to the Island of Fernando’s. [Take Me Out is an ITV dating game show -
the original TV Format of which came from an Australian show Taken Out, now franchised
out to over 30 countries. However, Fernando’s is not a real place and some say
that Fernando’s was a term coined by the Take Me Out show, as a play on words -
that the couples would take each other out on a date ‘for-a-Nando’s’…Fernando’s.
The couples who are selected to go on a date in the TV show in the first season
went on a date at Fernando’s which was actually Club Bijou in Manchester, after that it
was Cyprus and now the contestants go to the Canary Island of Tenerife.]

Trade Mark

An image used in the media of the
Cease and Desist letter shows Nando’s claiming infringement of a number of
their trade marks. The company - Nando’s Chickenland Limited – own 39
trade marks listed on the UK Intellectual Property Office website, in class
43 which includes restaurants, fast-food and take-away. Their marks include the
name, a logo in the form of Portugal's Barcelos Rooster [the unofficial symbol of Portugal]
and a multi coloured chilli, together with words “Extra Hot/Hot/Mild/Lemon
& Herb” amongst others. Nando’s states that their marks are infringed on
the outside sign, inside the Fernando’s restaurant and on the menu.

Aziz claims that he is being bullied into changing his
company’s name and had no intention of copying Nando’s - he wanted to sell Peri
Peri chicken, being of Portuguese origin, using the Portuguese chicken as a
symbol of the cuisine.

It could be that in relation to the Portuguese chicken is “indicating
characteristics of the goods or services.” This is a defence that allows
traders to describe the characteristics of their products or services such as
used in the case of Gerolsteiner Brunnen GmbH & Co v Putsch GmbHwhere the Court considered the trade name
‘Kerry Spring’ which was intended to identify the geographical location of the
water. The CJEU held that the test was whether the geographical location was used
within honest practices. Aziz claims he had no intention to infringe, but
whether or not he could prove honest practice is another thing...

Incidentally, a quick search on the UK trade mark register
also revealed a registered mark for a FERNANDO’S
in class 43 - restaurant, cafe, etc. So even if Reading Fernando’s are not
infringing the marks of Nando’s, they may still be infringing this registered
mark.

Passing off

Since Nando’s argue that
Fernando’s is trying to “benefit from some of things that make us who we are—our
menu, logo and even our name,” they may also bring an action for be passing off.
In order to establish passing off Nando’s would need to show the following:

1. Good will in the relevant location - there are two long standing
Nando’s restaurants in Reading, as well as others in neighbouring towns

Is this a Nando's or a Fernando's though?

2. Misrepresentation - False statement of fact as to origin,
quality, or nature of the goods which requires that there has been, or likely
to be confusion about the trading links between the claimants and defendants.
As explained in the case of United Biscuits v Asda [1997] RPC 513, customers
might be misled by the similarities of get-up, confusion has a broad
interpretation and does not require an intention to deceive. The test for which
is as set out in Neutrogena Corporation & Another v Golden Ltd [1996] RPC
473 is whether on the balance of probabilities a substantial number of members
of the public would be misled into purchasing the defendant's product in the
belief that it was the plaintiff's. The standard for confusion is rather low,
as eloquently explained by Justice Foster in Morningstar Corp Society v Express
Newspaper [1979] FSR. 113: “if a moron in a hurry would be misled.”

3. Damage – such as through loss of custom (actual and
potential); attraction of custom by the defendant using the claimant’s
goodwill; damage to the claimant’s reputation, and hence goodwill, through
false association [Stringfellow v McCain [1984] FSR 413].

Food for thought… this Kat is interested to hear what
readers think would be the likely outcome?

Personally, she believes that the owner of Fernando’s will concede
and that the case will not proceed. A Nando’s spokesperson said: “We
are really proud of our brand and we know it means a lot to our customers.
That’s why whenever we think there is trademark infringement we try to sort it
out amicably.” However, Aziz’s interviews with media may not necessary be good
press for Nando’s. Making statements such as “I’m just a small independent business
man” may attract sympathy from the public – as has been seen to be the case
when a large beer company dropped a case the public sided with a small family
run business, for example [Brewdog
here].

7 comments:

Can you hear the drums Fernando?I remember long ago another starry night like thisIn the firelight FernandoYou were humming to yourself and softly strumming your guitarI could hear the distant drums of trade mark lawyersAnd sounds of High Court actions were coming from afar

The likelyhood of confusion must be small based solely on the name, which is clearly different, and even smaller if other elements of both businesses are taken into account, like the decoration of the restaurant, how they place the order's, how the food is served, etc. Nando's do no have the monopoly of peri peri chicken, do they?

The logo, is the Barcelos cockerel, which is famous in Portugal, but I doubt the average customer in Reading would know about that...What I don't quite understand is the reference to Mexico... Peri Peri chicken has as much to do with Mexico, or Mexican cuisine as Enchiladas have to do with Portugal...

The public aren't completely stupid. This business isn't going to get much if any sympathy. They appear to have completely ripped-off the Nando's brand, rather than innocently choosing a brand with no awareness of any conflict. The Take Me Out reason for choosing "Fernando's" brand is laughable. Neither Take Me Out nor the Isle of Fernando's from that program have anything to do with Portugal or Portugese cuisine. This isn't a case of a big business bullying a small business. This is a big business rightly stopping a copycat business misappropriating their branding in bad faith.

An update on the dispute - I was walking past the Fernando's storefront this week and noticed rebranding work was being done - see https://twitter.com/AdrianStorrier/status/1019513784879153153 for the new logo.

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